Ex Parte Thatcher et al

Patent Trial and Appeal Board

Mar 31, 2017

11548287 (P.T.A.B. Mar. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/548,287 10/11/2006 David K. Thatcher THT-002U 5160
52966 7590
S chramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
HAIL, JOSEPH J
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
04/04/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mikeschramm @ besstek. net
mschramm @juneaubiosciences.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID K. THATCHER and REED C. STOKES
Appeal 2015-002163
Application 11/548,287
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—25.
Claims 26 and 27 are withdrawn. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as David K. Thatcher. App. Br. 2.
Appeal 2015-002163
Application 11/548,287
Claimed Subject Matter
Claim 1, reproduced below, illustrates the claimed subject matter.
1. A self-contained powered mopping and cleaning machine
for use in replacing a conventional mop and mop bucket without
said machine occupying a three-dimensional space greater than
that which would otherwise be occupied by said replaced
conventional mop and mop bucket, and for use in mopping,
cleaning, vacuuming, squeegeeing, and drying a portion of a
floor in a single pass without reusing cleaning fluid such that
used cleaning fluid is not placed onto a cleaned floor by said
machine, said machine having a cleaning fluid tank, a dirty fluid
recovery tank, a vacuum device, a electrical battery, a machine
function control apparatus, a machine steering apparatus, and a
floor cleaning head, wherein said machine fits within a three
dimensional spatial envelope of 26 inches by 30 inches by 54
inches.
Rejections
Claims 1—24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Johnson et al. (US 4,196,492, issued Apr. 8, 1980). Final Act. 2—3.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Johnson, Gurstein (US 5,584,094, issued Dec. 17, 1996), and
McCormick (US 6,226,832 Bl, issued May 8, 2001). Final Act. 3^4.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 3—7; Reply Br. 2—8). Appellants’ arguments do not
apprise us of error in the Examiner’s findings or conclusions. We adopt as
our own the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and in the Answer. We highlight and
address specific arguments and findings for emphasis as follows.
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Application 11/548,287
Appellants argue claims 1—24 as a group. App. Br. 3—5. We select
claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue that the subject matter of claim 1 is not obvious due
to the existence of one of the objective indicia of nonobviousness, namely
commercial success. App. Br. 3. In support of the “commercial success of
the Mopit™ floor scrubbing, mopping, and cleaning machine (Mopping
Machine),” Appellants cite “appellant’s July 3, 2010 declaration which
further included the Lofthouse, Porter, Pritchard, and Sachs Mopping
Machine customer declarations, as again documented in appellant’s July 13,
2011 declaration, as again documented in appellant’s June 7, 2012
declaration, and as further clarified in appellant’s July 3, 2013 declaration.”
Id. Appellants contend that there is a nexus between the claims and the
commercial success because the “commercial success is expressly
attributable to the sales of the Mopping Machine” that falls within the scope
of the claims. Id. at 4. Appellants also quote four customer declarations
stating that reasons for leasing the Mopping Machine “included the ability to
mop, sweep, vacuum, and squeegee dry a floor in a single pass and more
especially, the ability to store the Mopping Machine in a small maintenance
closet or other small area where a mop and bucket have traditionally been
stored.” App. Br. 4 (emphasis omitted). Appellants also contend that the
“Mopping Machine holds a 100% market share as there is no comparable
competing mopping machine that comports to the disclosed and claimed
invention.” Id.
We consider all evidence in support of Appellants’ assertions of
commercial success due to sales of Appellants’ Mopping Machine. “In the
ex parte process of examining a patent application, however, the PTO lacks
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Application 11/548,287
the means or resources to gather evidence which supports or refutes the
applicant’s assertion that the sales constitute commercial success.” In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “Consequently, the PTO must
rely upon the applicant to provide hard evidence of commercial success.”
Id. at 140. We have carefully considered Appellants’ arguments and the
declarations submitted in support. We agree with the Examiner that
Appellants’ evidence does not establish commercial success due to the novel
features of the invention claimed. Ans. 4—5.
Appellants’ declarations have not provided sufficient information
upon which we may determine whether the mopping machines sold were
commercially successful. The most recent declaration with sales numbers
describes gross sales increasing from $89,625 in 2007 to $186,554 during
only a portion of 2011. July 13, 2011 Declaration of David K. Thatcher
under 37 C.F.R. § 1.132 (hereinafter, the “2011 Thatcher Declaration” or
“2011 Thatcher Decl.”), at 2. Gross sales revenue was based on yearly unit
sales ranging from 75 (in 2007) to 106 (in 2009). Id. The 2011 Thatcher
Declaration provides a range for retail sales prices, and also states that lease
arrangements are offered, without specifying a number of products being
leased. See id. The declaration further asserts:
In all of my attendance at various tradeshows and in my
reviewing of floor maintenance industry related news, I have not
seen offered for sale a Mopping Machine like mine that provides
for mopping, cleaning, sweeping, vacuuming, and squeegee
drying of a floor surface functions (especially in a single pass) in
a compact size and weight so as to be able to occupy a space
normally reserved for a conventional mop and bucket. Thus I
believe that my above noted sales comprised substantially 100%
of the market for such Mopping Machine.
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Application 11/548,287
Id.
Appellants’ sales evidence provides no indication of whether the
number of units sold represents a substantial quantity in a relevant market.
As in Ex parte Jella, Appellants’ “proof of unit sales does not indicate
whether the numbers sold were a substantial quantity in the relevant
market.” 90 USPQ2d 1009, 1017 (BPAI 2008) (precedential); see also In re
Huang, 100 F.3d 135, 40 (Fed. Cir. 1996) (“Although Huang’s affidavit
certainly indicates that many units have been sold, it provides no indication
of whether this represents a substantial quantity in this market.”); In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[Information
solely on numbers of units sold is insufficient to establish commercial
success.”); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026—
27 (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal
showing of commercial success because “[wjithout further economic
evidence ... it would be improper to infer that the reported sales represent a
substantial share of any definable market”), overruled on other grounds in
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358 (Fed.
Cir. 1999).
Appellants’ declaration that “the Mopping Machine holds a 100%
market share as there is no comparable competing machine that comports to
the disclosed and claimed invention” (App. Br. 4; see also 2011 Thatcher
Deck 2) fails to provide relevant context to put into perspective Appellants’
sales numbers. We agree with the Examiner that “Appellants] [have] not
demonstrated how much of the market has left mops and buckets for the
claimed apparatus.” Ans. 5. “Similarly, Appellants] [have] neither proven
how much of the market has left larger machines with the same features, nor
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Application 11/548,287
[have] Appellants] proven how much of the market has left smaller or
similarly sized machines with more or less features.” Id. Appellants
contend their mopping machine is not in the same market as these products,
even though there may be cross-elasticity of demand. See Reply Br. 4—6.
Without deciding whether sales of Appellants’ product that falls
within the claims may constitute its own “market” according to some
measures, in this case, the lack of evidence as to the share of Appellants’
sales within a broader market with competing products precludes us from
making any meaningful determination as to whether Appellants’ sales
represent commercial success. Appellants assert that they “have used the
objective and rational guideline of the claimed subject matter — i.e. the
bounds of the claims — to define the market breadth.” Reply Br. 7.
Although we allow for the possibility of proving commercial success in a
market defined by the claim, and in which an applicant for patent shows 100
percent market share in such a market, for example with a truly disruptive
product that has no competition, we need not decide what evidence might be
necessary in such a case. Here, Appellants acknowledge the product sold
has competition (see Reply Br. 4—6),2 and it is evident that a broader market
could be defined that would provide context for Appellants’ sales figures.
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner’s finding that Appellants have
not established commercial success, as we consider Appellants’ evidence of
commercial success to be weak, at best. Appellants do not challenge the
2 We note also that the evidence relied on by Appellants to show a nexus to
the claimed features compares Appellants’ product to other products such as
a conventional mop bucket. See App. Br. 4 (quoting “Lofthouse, Porter,
Pritchard, and Sachs Mopping Machine customer declarations”).
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Application 11/548,287
Examiner’s conclusion of obviousness separate from the challenge to the
Examiner’s findings on commercial success. Nonetheless, in evaluating the
conclusion of obviousness anew in light of all the evidence, and in light of
Appellants’ arguments, we agree with the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Johnson. Thus, we sustain
the rejection of representative claim 1, and, for the same reasons, the
rejection of claims 2—24, which are not argued separately.
Appellants argue the rejection of claim 25 is in error for the same
reasons argued in support of claims 1—24. App. Br. 5—7. For the same
reasons as claim 1, we sustain the rejection of claim 25 under 35 U.S.C.
§ 103(a) as unpatentable over Johnson, Gurstein, and McCormick.
DECISION
We affirm the Examiner’s decision to reject claims 1—25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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